No. 11-____ IN THE Supreme Court of the United States R. J. REYNOLDS TOBACCO COMPANY (A NORTH CARO- LINA CORPORATION) AND R. J. REYNOLDS TOBACCO COMPANY (A NEW JERSEY CORPORATION), Petitioners, v. STAR SCIENTIFIC, INC., Respondent. O n P e t i t i o n F o r A W r i t O f C e r t i o r a r i T o T h e U n i t e d S t a t e s C o u r t O f A p p e a l s F o r T h e F e d e r a l C i r c u i t P E T I T I O N F O R A W R I T O F C E R T I O R A R I PAUL D. CLEMENT Bancroft PLLC 1919 M Street, NW Suite 470 Washington, DC 20036 DONALD B. AYER Counsel of Record LAWRENCE D. ROSENBERG MICHAEL S. FRIED SUSAN M. GERBER JONES DAY 51 Louisiana Ave., NW Washington, DC 20001 (202) 879-3939 [email protected](Additional Counsel Listed on Inside Cover)
include claims “particularly pointing out and dis-
tinctly claiming the subject matter which the appli-
cant regards as his invention.” 35 U.S.C. § 112 ¶ 2.
This Court has made clear that this definiteness re-
quirement demands that a valid patent inform the
public during the life of the patent of the limits of the
monopoly asserted—that is, what may be safely used
or manufactured without a license. Such practical
notice of the patent’s claim limits is necessary, inter alia, to avoid chilling the inventive creativity of oth-
ers.
In recent years, the Federal Circuit has adopted a
definiteness standard demanding only that patent
claims not be “insolubly ambiguous,” which test it
has often found satisfied if the claims are “amenable
to construction,” however difficult the task or debata-
ble the result. The question presented is:
Whether the Federal Circuit’s insolubly ambi-
guous/amenable-to-construction test for patent
definiteness, which upholds patents whose con-
strued claims fail to inform a skilled artisan of
the outer limits of the claimed monopoly, faithful-
ly implements § 112 ¶ 2 as interpreted by the de-
cisions of this Court.
ii
PARTIES TO THE PROCEEDINGS
AND CORPORATE DISCLOSURE STATEMENT
The parties to the proceeding below were Petition-ers R. J. Reynolds Tobacco Company (a North Caroli-na Corporation), R. J. Reynolds Tobacco Company (a New Jersey Corporation) (collectively, “Reynolds”), and Star Scientific, Inc. (“Star”). The Respondent, R. J. Reynolds Tobacco Company (a North Carolina Corporation), is successor by merger of R. J. Reynolds Tobacco Company (a New Jersey Corporation), which ceased to exist as of July 30, 2004.
Petitioner R. J. Reynolds Tobacco Company is di-
rectly and wholly owned by R. J. Reynolds Tobacco
Holdings, Inc. (a Delaware Corporation). R. J. Rey-
nolds Tobacco Holdings, Inc. is a wholly-owned sub-
sidiary of Reynolds American Inc., a publicly traded
corporation. Brown & Williamson Holdings, Inc.
owns more than 10% of the common stock of Rey-
nolds American Inc. and is an indirect, wholly-owned
subsidiary of British American Tobacco, plc., a public-
ly traded corporation.
iii
TABLE OF CONTENTS
Page
QUESTION PRESENTED .......................................... i
PARTIES TO THE PROCEEDINGS AND
CORPORATE DISCLOSURE
STATEMENT ....................................................... ii
TABLE OF CONTENTS ........................................... iii
TABLE OF AUTHORITIES ....................................... v
U.S. Const. Article I, § 8, cl. 8 ..................................... 4
ix
OTHER AUTHORITIES
Christa J. Laser, A Definite Claim On Claim Indefiniteness: An Empirical Study Of Definiteness Cases Of The Past Decade With A Focus On The Federal Circuit And The Insolubly Ambiguous Standard,
10 J. INTELL. PROP. 25 (2010) ............................... 34
Colleen V. Chien, Of Trolls, Davids, Goliaths, and Kings: Narratives and Evidence In The Litigation of High-Tech Patents,
87 N.C. L. REV. 1571 (2009) ................................. 31
John R. Allison, Mark A. Lemley, and Joshua
Walker, Patent Quality And Settlement Among Repeat Patent Litigants,
Corp. v. Ford Motor Co., 452 F.2d 163, 170 (7th Cir.
1971) (“Ambiguous, indefinite and vague patent
claims are void. The …. precision requirements ….
warn others skilled in the art against infringement,
and to enable them to benefit from the teachings of
the patent.”); Norton Co. v. Bendix Corp., 449 F.2d
553, 557 (2d Cir. 1971) (invalidating patent because
“[t]he claim descriptions, even …. in the light of the
diagrams and the full testimony below, fail[ed] to in-
form the public as to what may or may not be manu-
factured.”); Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 1241 (7th Cir. 1969) (“The precision
required [by the definiteness requirement] must also
be such as would put on notice all those working in
the crowded art so that they do not infringe on the
patented process.”).
B. The Federal Circuit’s Insolubly Ambiguous/
Amenable-To-Construction Standard,
Formulated In 2001, Deviated From This
Court’s Notice Requirement
1. For the first nineteen years of its existence, the
Federal Circuit also applied a standard that adhered
to the decisions of this Court, requiring patent claims
to provide the skilled artisan with actual notice of the
scope of the invention, when those claims are read in
light of the specification. As the court stated in 2001:
The definiteness inquiry focuses on whether
those skilled in the art would understand the
scope of the claim when the claim is read in light
of the rest of the specification.
Union Pac. Res. Co. v. Chesapeake Energy Corp., 236
F.3d 684, 692 (Fed. Cir. 2001). Applying this stan-
dard, the court invalidated method claims having a
“comparing” step because “‘comparing’ could undoub-
18
tedly have [multiple] meanings” and the claim scope
would vary depending upon which meaning was ap-
plied. Id. 3
2. In September, 2001, in Exxon Research & En-gineering Co. v. United States, 265 F.3d 1371, 1375
(Fed. Cir. 2001), the Federal Circuit for the first time
utilized language focusing on insoluble ambiguity
and amenability to construction in addressing a defi-
niteness challenge. After first discussing indefinite-
ness in terms of this Court’s oft-repeated requirement
of notice of the patent’s scope to skilled artisans, the
court proceeded: 3 Union Pacific substantially echoes language used by the Fed-
eral Circuit from 1982 until 2001, in decisions applying the de-
finiteness requirement. See, e.g., Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (“If
the claims, read in the light of the specifications, reasonably ap-
prise those skilled in the art both of the utilization and scope of
the invention, and if the language is as precise as the subject
matter permits, the courts can demand no more.” (quoting
Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d 124, 136
(2d Cir. 1958)); N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7
F.3d 1571, 1579 (Fed. Cir. 1993) (“Whether a claim is invalid for
indefiniteness depends on whether those skilled in the art would
understand the scope of the claim when the claim is read in
light of the specification.”); Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1358 n.2 (Fed. Cir. 1999). (“The test for
whether a claim meets the definiteness requirement is whether
one skilled in the art would understand the bounds of the claim
when read in light of the specification.”) (internal quotes omit-
ted); Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d
1374, 1378 (Fed. Cir. 1999) (“As a general matter, it is well-
established that the determination whether a claim is invalid as
indefinite ‘depends on whether those skilled in the art would
understand the scope of the claim when the claim is read in
light of the specification.’”) (quoting N. Am. Vaccine, 7 F.3d at
1579.
19
We have not insisted that claims be plain on their
face in order to avoid condemnation for indefi-
niteness; rather, what we have asked is that the claims be amenable to construction, however dif-ficult that task may be. If a claim is insolubly ambiguous, and no narrowing construction can
properly be adopted, we have held the claim inde-finite. If the meaning of the claim is discernible, even though the task may be formidable and the
conclusion may be one over which reasonable persons will disagree, we have held the claim suf-
ficiently clear to avoid invalidity on indefinite-
ness grounds. … By finding claims indefinite on-ly if reasonable efforts at claim construction prove futile, we accord respect to the statutory
presumption of patent validity, and we protect
the inventive contribution of patentees, even
when the drafting of their patents has been less
than ideal.
Id. (internal citations omitted)(emphasis added).
Since the decision in Exxon, the Federal Circuit
has consistently invoked the concepts of insoluble
ambiguity and amenability to construction as its
standard in resolving definiteness challenges. The
court has also regularly emphasized Exxon’s observa-
tions that claims should be found indefinite “only if
reasonable efforts at claim construction prove futile,”
and that such a construction will suffice even if the
task is “formidable” and the resulting construction is
one about which reasonable people will differ.
The Federal Circuit’s regular reliance on this new
concept of definiteness has turned on its head the
principle that patent claims are construed against
the drafter, who is in the best position to make sure
20
that the claims are drafted carefully to avoid confu-
sion. See Merrill, 94 U.S. at 569 (“No such question
could have arisen if appellant had used language
which clearly and distinctly points out what it is that
he claims in his invention.”).
Claims that are unclear and obtuse have been
upheld merely because a Federal Circuit panel is able,
with great effort and uncertainty, to construe them.4
The court has so held even though construability is
not at all synonymous with providing notice to skilled
artisans of an invention’s outer boundaries. To the
contrary, claims that on their face are inscrutable to
skilled artisans, let alone the general public, may
well be amenable to construction by a court’s arduous
efforts. By construing a claim, the court need only
provide a clear core meaning of the claim, and even
that requirement is hedged by the Federal Circuit’s
approval of constructions over which reasonable
people will disagree. Nothing in patent law requires
that, in order to be valid, a claim construction must
itself provide a clear definition of the patent’s scope.
The proper test of indefiniteness—whether the
claims provide effective notice of the patent’s bounda-
ries or scope—is a separate question left unanswered
by the fact that some construction of the claims is
possible. And if the mere fact that claims can be con-
4 The Federal Circuit has not always been clear about the logical
relationship between insoluble ambiguity and the requirement
of amenability to construction, and has often, but not always,
applied the categorical rule that a “claim that is amenable to
construction is not invalid on the ground of indefiniteness.” E.g., Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366,
1371 (Fed. Cir. 2006). See infra, note 6.
21
strued renders them definite, then this critical ques-
tion is one that the court need never reach.
3. That is just what has occurred in the decision
below, and in numerous other Federal Circuit cases
decided since 2001. Without any directive in the oft-
recited phrases that make up the insolubly ambi-
guous/amenable-to-construction standard, the Feder-
al Circuit has repeatedly rejected indefiniteness chal-
lenges without any serious consideration of whether
the patent puts skilled artisans on reasonable notice
of the limits of the claimed monopoly.
In 2002, in All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774 (Fed. Cir. 2002), the
court reversed a summary judgment of indefiniteness,
ruling that “[o]nly after a thorough attempt to under-
stand the meaning of a claim has failed to resolve
material ambiguities can one conclude that the claim
is invalid for indefiniteness.” Id. at 780. The trial
court had found no definition in the patent of the
claim term, “original identified mass,” and had thus
concluded that “‘a person skilled in the art would not
be able to understand the bounds of the claims.’” Id.
at 777. The Federal Circuit, relying on the inventor’s
statements during prosecution that “disclaim[ed] a
specific shape,” found that “[t]he meaning of the
phrase ‘original unidentified mass,’ arrived at after
reviewing the specification and consulting the prose-
cution history, is indeed definite and clear.” Id. at
780. By focusing myopically on construability and by
defining the claim limitation in terms of what the pa-
tentee had excluded during prosecution, the Federal
Circuit’s construction determined only one attribute
that the invention did not have—any “specific pre-
formed size and shape.” Id. Its analysis failed entire-
22
ly to address whether the patent in other respects
provided reasonable notice to a skilled artisan of the
claims’ outer limits or scope.
Similarly, in Bancorp Services, L.L.C. v. Hartford Life Insurance Co., 359 F.3d 1367, 1372 (Fed.
Cir.2004), the Federal Circuit invoked the language
of Exxon to justify reversing the district court’s inde-
finiteness ruling because it was able to “discern” a
“meaning” for the claim terms at issue. The court ac-
knowledged that the claim term “surrender value
protected investment credits” was not defined in the
patent nor in any industry publication. Id. at 1371.
The court nonetheless reversed the trial court’s inde-
finiteness holding because it was able to piece togeth-
er a construction on a word-by-word basis, saying
that “the components of the term have well-
recognized meanings, [and] allow the reader to infer
the meaning of the entire phrase with reasonable
confidence.” Id. at 1372. This type of judicial cherry-
picking, which parses out the words of the claims and
cobbles together definitions for each word to “infer”
some meaning for individual claim terms, ignores the
key requirement of definiteness demanding not just a
core meaning of claim terms but reasonable defini-
tion of the boundaries or scope of the claimed inven-
tion.
In Energizer Holdings, Inc. v. International Trade Commission, 435 F.3d 1366 (Fed. Cir. 2006), the In-
ternational Trade Commission had held patent
claims indefinite for failing to recite the required an-
tecedent basis for the term “said zinc anode,”5 and
5 The antecedent-basis requirement is a rule of patent drafting
that avoids ambiguity by requiring that a draftsman identify
23
because even if construed, the claim remained un-
clear and ambiguous. The Federal Circuit reversed,
stating flatly that “[a] claim that is amenable to con-
struction is not invalid on the ground of indefinite-
ness.” Id. at 1371. On that basis, while acknowledg-
ing that the patent provided no “antecedent basis for
‘said zinc anode,’” the court ignored the Commission’s
stated concerns that the claims as construed re-
mained unclear and ambiguous and found the claims
sufficiently definite simply because they could be
construed. Id. (“Here, it is apparent that the claim
can be construed. … The Commission’s holding of in-
validity on the ground of indefiniteness is reversed.”)
In 2008, in Praxair, Inc. v. ATMI, Inc., 543 F.3d
1306 (Fed. Cir. 2008), the district court had ruled the
patent indefinite, where the disputed claim term was
“not described, labeled, or coherently discussed in the
patent,” and its meaning was not “discernable from
the patent.” Id. at 1320. The Federal Circuit made
brief reference to the “public notice function” of the
definiteness requirement, id. at 1319, but rejected the
finding of indefiniteness without any discussion of
the notice of claim limits actually afforded by the pa-
tent. To the contrary, noting that “[i]ndefiniteness is
a matter of claim construction,” id., the court upheld
the patent as definite enough because it was able to
construe, and thus determine a meaning for, the dis-
puted claim term, id., at 1321. It did this even as it
each claim element clearly by using “a” or “an” when an element
is first introduced and with “said” or “the” in subsequent refer-
ences to that same element. See Manual of Patent Examining
Procedure § 2173.05(e).
24
conceded that the patent was “not [] a model of clari-
ty,” and dismissed expert testimony that the claims
were indefinite. Id.
Most recently, in Wellman, Inc. v. Eastman Chem-ical Co., 642 F.3d 1355, 1366 (Fed. Cir. 2011), the
Federal Circuit reversed the lower court’s summary
judgment of indefiniteness, applying the rule that
“[c]laims need not be plain on their face in order to
avoid condemnation for indefiniteness; rather, claims
must only be amenable to construction.” There, the
patents claimed a certain polymer having a particu-
lar measured value for “TCH.” While the claims plain-
ly defined the boundary of TCH as being >140 , “the
district court found that the … patents do not dis-
close sample conditions and testing parameters es-
sential for obtaining consistent DSC measurements
[of TCH].” Id. at 1359. But the Federal Circuit none-
theless ruled that the claims, once construed, were
sufficiently definite, even though the construed
claims did not convey sufficient information to enable
a skilled artisan to measure TCH reliably in order to
determine the bounds of the claims. 6
6 In a few cases during this same period, the Federal Circuit,
while first reciting these now-familiar phrases, has sidestepped
the misleading character of the insolubly ambiguous/amenable-
to-construction language by moving past it to focus on the ne-
cessity of providing notice of the patent’s outer boundaries, and
on that basis has invalidated patents as indefinite. These cases
are at odds with the insoluble ambiguity/amenable-to-
construction approach that reflects the dominant strain in the
Federal Circuit’s jurisprudence and only underscore the need for
this Court to clarify the proper standard. See Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1340 (Fed. Cir. 2003)
(finding claims indefinite because the patent failed to disclose
information “critical to discerning whether [a compound] ha[d]
25
As discussed below, the present case is both the
latest and the most egregious in this line of mis-
guided decisions.
C. The Decision Below Is An Egregious Example
Of The Federal Circuit’s Definiteness
Standard Being Applied To Uphold A Patent
That Affords No Notice At All Of The
Invention’s Outer Boundaries
For generations, tobacco farmers have dried yel-
lowed tobacco leaves in curing barns in which humid-
ity, temperature and airflow have been modified in a
number of ways, including using heat exchangers to
inject exhaust-free heated air. The patents in this
case purport to use a “controlled environment” to
substantially prevent an anaerobic condition around
the plants—and thus stop the formation of nitrosa-
mines—by using air free of combustion gases to vary
at least one of humidity, temperature and airflow.
Star urged, and the trial court adopted, a construc-
tion of “controlled environment” as “controlling one or
more of humidity, temperature and airflow in the
curing barn, in a manner different from conventional
curing, in order to substantially prevent the forma-
been produced by the claimed process”); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)
(invalidating ambiguous claims because the claim term, as con-
strued, was “purely subjective,” and claim limitations “must be
objective” in order to “notify the public”); Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 (Fed Cir. 2008)
(holding claims indefinite because the proposed construction
failed to resolve “the ambiguity in the scope of the [claim] term”).
26
tion of TSNAs.” Pet.App.16a-17a. But neither this
construction nor the patent on its face provides any
guidance as to how the patented “controlled environ-
ment” differs from prior art, conventional curing
processes that have been used by farmers for dec-
ades. Both parties’ experts testified that one skilled
in the art could not distinguish the methods used to
create the patented “controlled environment” from
long-used techniques of conventional tobacco curing.
Pet.App.32a; Pet.App.79a-80a; JA45681. Thus the
patents are indefinite.
The majority below avoided this conclusion by first
invoking the rule that claims are indefinite only if
they are “not amenable to construction” or “insolubly
ambiguous,” which it said does not demand
“[a]bsolute clarity” and is satisfied even “when dis-
cerning the meaning is a ‘formidable [task] and …
reasonable persons will disagree [about the conclu-
sion].” Pet.App.16a. Noting that the claim had been
construed, the Federal Circuit said further that one
skilled in the art “would … recognize” and “know how
to establish” a “controlled environment,” because “to-
bacco curing variables are well known in the tobacco
industry.” Id. at 17a-18a.
Indeed, the court ruled that the claimed “controlled
environment” is not indefinite because tobacco far-
mers will know how to achieve it by varying humidi-
ty, temperature and airflow using “conventional me-
thods commonly … used in the U.S.” Id. at 18a. But,
as Judge Dyk explained in dissent, this is precisely
the problem. According to the court, the patents rely
on prior industry experience to tell tobacco farmers
how to achieve the claimed “controlled environment.”
But nothing is said about when the farmers’ use of
27
familiar techniques ceases to be the practice of “con-
ventional methods” and begins to infringe the pa-
tents. Id. at 31a-32a. In a wholly circular manner,
the world is told only that the patented “controlled
environment” is “different from conventional curing”
techniques, and that conventional curing is air-curing
or flue-curing “without the controlled conditions” re-
quired by the claims. Id. at 32a. The patents give no
guidance at all about where one ends and the other
begins.
Further, the claims define the method in part by
reference to the resulting product in which formation
of TSNAs is substantially prevented. Thus, even if
skilled artisans could determine how to create the
“controlled environment” referenced in the claims—
and they cannot—they could not determine whether
the method claims had been infringed until after committing a potentially infringing act, based on
whether formation of TSNAs was substantially pre-
vented.7
The patents, even as construed, thus utterly fail to
advise what methods or conditions to avoid in order
to steer clear of the boundary of the patent claims.
7 If a farmer uses techniques capable of infringing the claimed
method, whatever they may be, infringement could theoretically
rest on “as little as one instance” in which the required preven-
tion of TSNA formation is achieved. See Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009). Thus, the
Federal Circuit has opened the door to the chilling prospect that,
if Star’s patents are not invalid for indefiniteness, Star could file
an infringement claim whenever a farmer produces a single
batch of TSNA-free tobacco, putting such farmer to the task of
proving that the batch had been produced by “conventional me-
thods,” whatever those may be.
28
The public is simply forced to guess what methods or
techniques will and will not invade the patent mono-
poly.
Accordingly, this Court should grant review and
reaffirm that the touchstone of patent definiteness is
the requirement that a patent provide notice of a pa-
tent’s outer limits to those of ordinary skill in the art.
II. THIS CASE PRESENTS AN IMPORTANT AND
RECURRING ISSUE
A. Uncertainty About A Patent’s Outer
Boundaries Discourages Innovation And
Gives Rise To Unnecessary And Wasteful
Litigation
Upholding the validity of patents with uncertain
claim language undermines the patent system’s fun-
damental goal of encouraging innovation. Strong and
consistently interpreted patent rights are essential to
promoting innovation and technological advancement,
and requiring definite claim language avoids creating
a “zone of uncertainty” around patent rights that can
discourage innovation. United Carbon, 317 U.S. at
236. See Dawson Chem. Co. v. Rohm & Haas Co.,
448 U.S. 176, 221 (1980) (recognizing “the policy of
stimulating invention that underlies the entire pa-
tent system”).
The Federal Circuit’s insolubly ambiguous/amen-
able-to-construction standard directs attention away
from this Court’s clear mandate that skilled artisans
receive reasonable notice of the boundaries of the pa-
tent. Indeed, in its simplest articulation, equating
definiteness with construability, the Federal Circuit’s
holding that “[a] claim that is amenable to construc-
tion is not invalid on the ground of indefiniteness,”
29
Energizer Holdings, 435 F.3d at 1371, is an obvious
perversion of the law as articulated by this Court.8
8 In addressing the Court’s request for his views by recommend-
ing denial of certiorari in Applera Corp. v. Enzo Biomchem, Inc., 131 S. Ct. 3020 (2011) (cert. denied), the Solicitor General him-
self raised questions about the suitability of the Federal Cir-
cuit’s insolubly ambiguous/amenable-to-construction standard
and that court’s elaboration of it. The Solicitor noted that,
“[r]ead in isolation, those phrases . . . might suggest an insuffi-
ciently demanding definiteness standard to a district court look-
ing for guidance,” Br. at 13, and even that the “Federal Circuit
may on occasion have used [its test] while conducting a defi-
niteness inquiry that in substance was insufficiently rigorous.”
Id. at 15.
At the same time, the Solicitor asserted that “[a]t least in the
main run of its decisions,” the Federal Circuit has used those
phrases “to express principles that are well grounded in this
Court’s” cases. Br. at 13. That conclusion, which was unsup-
ported by any comprehensive review of the circuit’s decisions,
and pre-dated Eastman and the present case, cannot be squared
with the showing above that in most cases where claims are
construable but still fail to provide reasonable notice of claim
boundaries, the court has wrongly found them definite enough.
The government’s brief in Applera is otherwise unexceptional.
The brief argues at substantial length, Br. at 18-22, that the
circuit there correctly decided a highly fact-bound question
whether one of skill in the art of designing and labeling nucleic
acid probes would understand the meaning of the claim term
“substantial interference,” id. at 15.
The brief also points out that the Applera decision “did not use
either the phrase ‘insolubly ambiguous’ or the phrase ‘capable of
construction.’” Id. For all of these reasons, the Solicitor General
concluded that the petition “provide[d] an unsuitable vehicle for
determining whether the Federal Circuit in other decisions has
used phrases like ‘insolubly ambiguous’ to announce a separate,
legally deficient definiteness standard,” Id. at 16 (emphasis in
original).
30
As Judge Plager has commented concerning the
Federal Circuit’s present approach to the issue of pa-
tent indefiniteness:
Despite the varying formulations that this court
has used over the years in describing its “indefi-
niteness” jurisprudence … , the general conclu-
sion from our law seems to be this: if a person of
ordinary skill in the art can come up with a
plausible meaning for a disputed claim term in a
patent, that term, and therefore the claim, is not
indefinite.
Enzo Biochem, Inc. v. Applera Corp., 605 F.3d 1347,
1348 (Fed. Cir. 2010)(Plager, J. dissenting from deni-
al of rehearing en banc), cert. denied, 131 S. Ct. 3020
(2011). He emphasized that it is not “until three
court of appeals judges randomly selected for that
purpose pick the ‘right’ interpretation that the public,
not to mention the patentee and its competitors,
know what the patent actually claims.” Id. 9
The Solicitor’s brief in Applera thus gives no basis for denying
review here, where the patent makes no distinction at all be-
tween the patented controlled environment and conventional
curing methods, and the analysis is driven by the “insufficiently
demanding” language that the Federal Circuit now utilizes as
its standard of patent indefiniteness.
9 Judge Plager’s concerns are well justified. The data shows
that the Federal Circuit reverses challenged claim constructions
on appeal nearly 40% of the time. Kimberly A. Moore, Mark-
man Eight Years Later: Is Claim Construction More Predicta-ble?, 9 LEWIS & CLARK L. REV. 231, 239 (2005). Given this high
reversal rate and the Federal Circuit’s application of the “inso-
luably ambiguous” standard that upholds patent claims if they
are amenable to construction, the public notice function of the
Section 112, ¶ 2 is nearly eviscerated.
31
Further, as Judge Plager has observed elsewhere:
One consequence of this particular reading of the
statute is that it removes a significant impetus
for clearer claim drafting, thus reinforcing the
system’s tolerance for uncertainty in claims. In
addition, and importantly for the court, it opens
the way for claim interpretation cases to come to
the court in which the claims at issue are so am-
biguous that there are a variety of possible un-
derstandings; yet, because some conclusion about
meaning is possible, the claim falls short of being
“not amenable to construction.”
S. Jay Plager, The Federal Circuit As An Institution: On Uncertainty And Policy Levers, 43 LOY. L.A. L.
REV. 749, 759 (2010). See also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1311
(Fed. Cir. 2011) (Plager, J., concurring) (“I have writ-
ten elsewhere about the curse of indefinite and ambi-
guous claims, divorced from the written description,
that we regularly are asked to construe, and the need
for more stringent rules to control the curse.”).
The “curse” of indefinite and ambiguous claims is
further exacerbated when patentees seek to enforce
broad and ambiguous patent claims by twisting their
meaning to try to read them on profitable, commer-
cialized products and processes. See Colleen V.
Chien, Of Trolls, Davids, Goliaths, and Kings: Narr-atives and Evidence In The Litigation of High-Tech Patents, 87 N.C. L. REV. 1571, 1580 (2009); John R.
Allison, Mark A. Lemley, & Joshua Walker, Patent Quality And Settlement Among Repeat Patent Liti-gants, 99 GEO. L.J. 677, 692-94 (2011) (citing recent
empirical evidence that the vast majority of the most
litigated patents—the ones that involve the most
32
suits against the most defendants—are filed by par-
ties targeting an entire industry). Indeed, when the
boundaries are not clearly defined, productive com-
panies may be deterred from legitimate pursuits and
drawn into wasteful litigation that disrupts and di-
verts resources that could be otherwise spent to grow
the business. Festo, 535 U.S. at 732. As a result, in-
novation, productivity, and commercialization of use-
ful technology suffers.
B. The Federal Circuit’s Recurring Failure To
Enforce The Definiteness Requirement Will
Likely Persist Unless This Court Intervenes
The Federal Circuit’s multiple reversals of patent
indefiniteness holdings leave little doubt that the in-
solubly ambiguous/amenable-to-construction stan-
dard is well-entrenched and is having a dramatic ef-
fect to water down the definiteness requirement as it
has been articulated by this Court for well over a cen-
tury. While the technical nature of many patents can
make challenging any assessment of the character of
the notice they provide, the decisions discussed above
are cases where the absence of notice seems quite
clear. And the decision below, involving air flow to
cure tobacco in a barn, and circular definitions of the
patented “controlled environment” and the prior art
conventional curing in terms of the absence of the
other, is the starkest case to date of a patent being
upheld that provides no notice at all of the inven-
tion’s outer boundaries.
Nor is the Federal Circuit itself likely to correct the
situation. During the past two years, in this case and
two others, that court has denied petitions for rehear-
ing en banc asking the court to reconsider the proper
standard for indefiniteness. See Eastman Chemical
33
Co. v. Wellman Inc., No. 2010-1249 (petition denied
Aug. 11, 2011); Enzo, 605 F.3d at 1347 (petition de-
nied). The unanimous denial of such en banc review
in the present case, even in the face of Judge Dyk’s
powerful opinion demonstrating the majority’s error,
suggests that a sense of futility may have settled in
among those on the court who have previously spo-
ken out against the court’s approach.
The flaws in the Federal Circuit’s erroneous stan-
dard are further compounded because the court does
not apply its standard consistently. At least, if the
court’s erroneous rule were applied uniformly, com-
petitors would know that patent claims, if construa-
ble, would be enforced, and they could make business
decisions based upon that predictable outcome. See S.
Rep. No. 97-275 at 6 (1981) (reasoning that uniform
patent laws resulting from Federal Circuit’s creation
would yield a benefit that “[b]usiness planning will
become easier as more stable and predictable law is
introduced”). But, when it is unclear whether ambi-
guous patent claims will be upheld or struck down as
indefinite, competitors struggle not only to determine
the boundaries of the claimed invention, but also to
evaluate the patent’s validity, which is a fundamen-
tal inquiry in any patent valuation analysis. As a re-
sult, it is much more difficult for patentees and com-
petitors to reach a business solution that will permit
innovation and enterprise.
Further magnifying the deleterious effects of the
Federal Circuit’s crazy quilt approach, indefiniteness
challenges are mounted in patent-infringement cases
with increasing frequency. Christa J. Laser, A Defi-nite Claim On Claim Indefiniteness: An Empirical Study Of Definiteness Cases Of The Past Decade
34
With A Focus On The Federal Circuit And The Inso-lubly Ambiguous Standard, 10 J. INTELL. PROP. 25
(2010) (showing increase in the number of cases from
1998-2008 in which patent validity was challenged on
indefiniteness grounds). Indeed, because indefinite-
ness is an issue in so many patent infringement cases,
some of the district court judges in the Eastern Dis-
trict of Texas have incorporated a deadline for bring-
ing indefiniteness challenges into their standard
scheduling orders as part of the claim construction
process.10 Even before this recent uptick in cases in-
volving indefiniteness issues, the Federal Circuit had
issued 17 decisions involving indefiniteness in the pe-
riod from 2006 to 2008, and it issued nearly 50 such
decisions in the decade from 1998 to 2008. Id. at 30.
But, in the end, the problem is not just the number
of cases in which indefiniteness is raised, but the dis-
connect between the Federal Circuit’s standard and
this Court’s precedent. This Court should grant re-
view to reaffirm that the standard is clear notice and
not insoluble ambiguity or mere amenability to con-
struction.
CONCLUSION
The petition for a writ of certiorari should be
granted.
10 See, e.g., Judge Davis’ standard Docket Control Order for pa-
